Navigating Cross-Border Patent Infringement in Germany

A Detailed Analysis for Legal Experts

At the heart of patent protection lies the principle of territoriality, a fundamental concept that confines rights to the borders of the nation granting the patent. Historically, this principle sufficed as technological advancements were predominantly contained within these borders. Yet, the modern digital age—characterized by advancements in cloud computing, the proliferation of Internet of Things (IoT) devices, and globally accessible network-based services—presents unprecedented challenges to the established parameters of patent law.

The Principle of Territoriality in the Digital Age

Particularly in Germany, a nation at the forefront of the global patent arena, the enforcement of a German-issued patent encounters intricate dilemmas when infringement crosses international boundaries. A critical question surfaces: Can an act be classified as an infringement under German law if it involves a German patent but occurs partly outside German borders? Specifically, must all steps of a process protected by a German patent take place within the country to establish infringement?

The German legal framework is navigating these uncharted waters in the absence of definitive rulings from the Federal Court of Justice concerning cross-border patent infringement. This has led to the emergence of a complex tapestry of regional court decisions, each introducing subtle distinctions and interpretative nuances. The lack of uniformity has given rise to two primary jurisprudential approaches, both of which seek to reconcile the principle of territoriality with the realities of contemporary, interconnected technologies.

Regional Court Approaches to Cross-Border Infringement

The first school of thought is encapsulated by the „territory of technical success“ concept, primarily stemming from the jurisprudence of the regional court and the regional high court of Düsseldorf. This line of reasoning emphasizes the location where the patented technology exhibits its intended effect. If a patent-protected process is executed partly in Germany and partly abroad, the liability for domestic patent infringement hinges on whether the technical success of the invention occurs in Germany and if the user consciously utilizes the foreign process steps for this purpose. This approach was notably followed in the decision of LG Düsseldorf, Urt. v. 28.7.2020 – 4 a O 53/19 – concerning online vision testing.

The Düsseldorf Perspective on Technical Success

The Düsseldorf court’s stance aligns with the „territory of technical success“ jurisprudence, positing that in cases of multi-jurisdictional patent infringement, the determining factor under German law is the locus of the technical success—the realization of the patent’s promised benefit. The court underscores the necessity for the infringer to intentionally engage the foreign-executed aspects of the process with the goal of achieving technical success within Germany.

Moreover, this viewpoint scrutinizes the relevance of the method steps conducted abroad in relation to their contribution to the patented invention’s technical benefits, potentially over the prior art. If these foreign steps are found to be non-essential, the emphasis remains on the activities occurring within Germany leading to the technical success. This highlights the significance of the result over the location of individual process steps, suggesting a pathway for patent enforcement that transcends borders, provided the culmination of the patented method’s benefits are realized domestically.

The Mannheim View: Execution Predominance

The second line of reasoning zeroes in on the „territory where the invention is predominantly executed“ – pinpointing the location where the critical elements of the invention are operationalized. This perspective, which largely originates from case law developed by the regional court of Mannheim, places significant weight on the acts committed within Germany in relation to the patented process. This line of jurisprudence was evident in the decision of LG Mannheim, Urt. v. 09.10.2018 – 2 O 163/17 – regarding music streaming services.

According to the Mannheim court, for a foreign act to be part of a domestic infringement, the German actions must be central to the patented process to such a degree that the overall infringing act is deemed to occur within Germany, due to the realization of the inventive success there.

This perspective demands that the domestic actions must be of such importance for the specifically protected claim that the infringing act must ultimately be regarded as having been committed in Germany. The emphasis is not merely on the manifestation of technical success but on the relative importance of domestic acts in fulfilling the overall patented method’s objectives. This approach adopts a holistic view of the patented process, considering the significance and role of each step in relation to the patented invention’s goals and solutions.

Implications of Court Interpretations on Patent Strategy

The divergent perspectives presented by German regional courts on cross-border patent infringement highlight the critical nature of strategic court selection. Patent infringement is not simply a matter of proving unauthorized use or implementation; in instances where the infringement spans multiple jurisdictions, the nuanced interpretations of different courts on what constitutes an infringement within Germany can be decisive.

Optimizing Patent Claims for German Jurisdiction: Strategic Recommendations

Within the complex milieu of German patent law, where court interpretations on cross-border infringements are not uniform, patent claim optimization becomes paramount. The juxtaposition of Düsseldorf’s „technical success“ criterion with Mannheim’s emphasis on the „predominant execution“ of the patented process underscores the need for strategic drafting of claims, with an acute awareness of regional leanings and precedents. This consideration is particularly pertinent for patents that could potentially be enforced across borders, such as those involving digital and network-based technologies.

Tailoring Claims to Court Interpretations

To safeguard against cross-border infringement under German jurisdiction, patent practitioners are advised to carefully construct claims that account for the location of an invention’s key steps and its technical success: patent claims should ideally be drafted so that the technical advantages of the invention are necessarily realized within Germany.

Formulating claim elements that embody the technical advantage from the perspective of domestic operations increases the likelihood of meeting the „technical success“ criterion. Relying on technical success means aligning the core ideas of the invention with claim elements that would be executed domestically. However, this means that it becomes not just preferable but essential to articulate in the patent specification the technical advantages of the invention. This specificity in the patent specification is crucial.

Ideally, the place where the technical success of the invention is realized and the implementation of the most relevant features of the invention with regard to patentability will then coincide territorially, so that it ultimately no longer matters which of the above-mentioned lines of reasoning is now pursued by the courts. Utilizing a closed loop of data or information flow that begins and technically concludes within Germany enhances the patent’s enforceability.

Drafting System Claims and Addressing Individual Parties

System claims pose a particular challenge in patent law, as they often involve multiple components and parties. It is advisable to construct these claims while avoiding dependencies on actions by parties who cannot be sued, such as individual end users. Instead, claims should be formulated such that an infringement can be attributed to a single, sueable entity. This approach simplifies the process of identifying and prosecuting potential infringers.

Flexibility in Claim Formulation

While drafting patent applications, it is not obligatory to immediately restrict independent claims to specific feature combinations. German infringement proceedings allow for the enforcement of patents based on independent claims tailored to the particular matter of infringement. Therefore, maintaining fallback positions in dependent claims is a prudent strategy, providing flexibility to adapt to the circumstances of an infringement case.


The judicial landscape for cross-border patent infringement in Germany is evolving, shaped by the disparate views of regional courts. The decisions emerging from Düsseldorf and Mannheim provide a glimpse into the complex terrain that patent holders must navigate. These diverse perspectives underline the importance of strategic claim construction, with consideration for regional interpretations, to successfully manage the challenges of cross-border patent infringement within German jurisdiction.


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Author: Dr. Michael Schmid